from the comic-can dept

In the wake of San Diego Comic-Con winning its years-long lawsuit against Salt Lake Comicon over its trademark on the term "comic-con", much of the media coverage was somewhat apocalyptic as to what the consequences would be for cons across the country. Despite the payout for winning the suit being a paltry $20k, more focus was put on just how other cons would react. The early returns are mixed, with some proactively undergoing name-changes to avoid litigation and others staying stalwart. The point we have made all along is that this win for SDCC was not some ultimate final act on the matter.

The Salt Lake lawyers filed the paperwork on Tuesday in response to last month’s eight-day trial in U.S. District Court, during which jurors decided that the California convention’s trademarks are valid. The jury found that the infringement was not willful and awarded $20,000 in damages to the San Diego Comic-Con, which had sought $12 million.

It will be very interesting to see where this goes, because many of us that observed the goings on of the initial trial were surprised at its outcome. From a trademark perspective, the arguments for genericide raised by SLCC seemed quite obvious. The evidence of genericide is present in every bit of follow up coverage one sees dealing with how many other shows with some version of "comic con" in their names are either changing those names or standing firm and continuing to use them. The phrase is everywhere in the industry, which only makes sense, given that the phrase is essentially nothing more than a description of the type of show being conducted. Part of the issue raised in the filing for a new trial appears to be how much the jury was allowed to hear about other cons using the term nationwide.

Part of the excluded evidence was testimony about the use of “comic con” by third-party competitors, which could make the term generic, the motion says. In addition, according to the motion, the trial judge gave a defective instruction that said competitive use is inadequate to establish genericness.

It's easy to see how such misguided instructions and barring of relevant evidence would give rise to such an erroneous verdict. Regardless, it seems likely that there will be more to come in round two of the wrath of cons.

from the the-war dept

After following the saga of what seemed like a truly misguided lawsuit brought by the San Diego Comic-Con against the company putting on the Salt Lake ComiCon, the whole thing culminated in the SDCC getting a win in the courtroom. One of the reasons this verdict threw many, including this writer, for a loop is that the defendant in the case made the argument that the SDCC had allowed the term "comic con" to become generic, an argument buttressed by the reality of there being roughly a zillion comic conventions using the term across America. Despite the SLCC's public discussions about appealing the decision and the fact that proceedings are already underway to cancel the SDCC's trademark entirely, much of the media speculation centered around what those zillion other conventions would do in reaction to the verdict.

It was a question that seemingly made sense, but the actual reaction by at least some conventions should have been plainly predictable. And, indeed, now there are some conventions willing to come out and publicly say they aren't going to change a damned thing based on this one verdict.

Yakima’s Central City Comic Con will hold off on a name change after one of the nation’s largest comic conventions won a trademark lawsuit. Yakima’s comic convention started in 2015, and is one of more than 100 conventions that uses “Comic Con” in their names.

“I don’t know how you can trademark two words that are common,” said Jamie Burns, Central City Comic Con events coordinator.

She said Yakima’s convention organizers are taking a wait-and-see attitude, watching to see whether the Emerald City Comic Con in Seattle or Portland’s Rose City Comic Con change their names in response.

Rose City, of course, wouldn't need to change its name as it somewhat infamously and more conveniently decided to partner with the San Diego Comic-Con in the middle of the whole trademark trial, but the larger point remains. The war was not the trademark trial. That was merely the opening battle. To win this war, that the SDCC decided to start for no conceivable reason, it will need to pepper the country with lawsuits against a hundred or so comic conventions, hopefully winning more than it loses and hopefully getting more than $20k a pop, which is what it earned from the three-year campaign against SLCC. All the while, mind you, it must also hope its "comic-con" trademark isn't suddenly cancelled out from underneath it by a USPTO that might finally realize the term is both generic and descriptive.

That's quite a hill to climb and must look more like Waterloo than Normandy.

from the how-heroic dept

When I wrote about the monumentally silly trademark dispute between the San Diego Comic-Con and the Salt Lake City Comic Con, I didn't appreciate the simple nature of that trademark dispute. Sure, the idea that the phrase comic-con, or comic con, could be trademarked seemed wrong. The phrase is arguably both generic and descriptive, after all. But at least the dispute was simple.

A trademark battle currently underway in Texas is less so, unfortunately. This dispute involves two relatively new comic conventions, Houston's nickname of "Space City", and the city's convention bureau buying into the convention industry itself.

Houston's convention bureau is suing the operators of a popular local convention over the use of "Space City" in its name, claiming it infringes on a 12-year-old trademark. The convention in question, Space City Comic Con, also happens to compete with a similar event that is half-owned by the Greater Houston Convention and Visitors Bureau itself. The bureau acquired a 50 percent stake in the more established Comicpalooza last September, spokesman A.J. Mistretta said.

Both events bring in television and film stars for appearances that attract thousands of autograph buyers. Fans come dressed as their favorite characters from science fiction, anime and super-hero fantasies to browse exhibits, purchase items from vendors and play video and table-top games. The fests charge comparable admission fees.

Now, there's several things we can dig into here, but let's focus instead on the timeline of events to get a good understanding of why this dispute is dumb and contrary to the purpose of trademark law. This isn't laid out well in the link for some reason, but I'll make it easy for you.

2004: the Greater Houston Convention and Visitors Bureau is granted a trademark for "Space City" for use in promoting tourism, business and conventions in the Houston area.

2008: Comicpalooza began as a small comics convention in Houston and has grown larger since.

2012: Space City Comic Con began as a small comics convention in Houston and has grown larger since.

2016: the Convention and Visitors Bureau sues Space City Comic Con for using "space city" for which it has the 12 year old trademark.

Any reading of that timeline leads to the obvious conclusion: the Bureau didn't give a damn about a comic convention's use of "space city" until it was heavily invested in a competing convention. That the name went unchallenged for several years is a wonderful indication that, assuming the Bureau wants to claim infringement, it wasn't bothering to police its trademarks properly. The article quotes a rep for the Bureau claiming it was unaware of the comics convention, which seems strange since knowing and promoting such conventions is the entire point of the Bureau to begin with.

And even setting aside the problematic timeline and all of its implied opportunism, Space City Comic Con can further defend itself by pointing out that the term "space city" at this point has become a generic nickname for Houston, harkening back to the glory days of America's space program.

One possible line of defense for Space City Comic Con is to prove that "Space City" is a generic term that has become synonymous with Houston, said Bruce Patterson, intellectual property lawyer with Patterson and Sheridan in Houston. The bureau also has to prove "Space City" is famous, said Amanda Greenspon, trademark lawyer with Munck Wilson Mandala in Dallas.

"It's not just enough to be famous in Texas. You have to be famous around the country, she said. "I don't know if 'Space City' is famous in Arkansas, North Dakota or New York."

All around, it's just a slimy look for Houston's Convention and Visitors Bureau.

from the you-guys-aren't-getting-it dept

Roughly a year ago, we brought you the very dumb story of the San Diego Comic-Con suing Don Farr Productions, organizers of the Salt Lake City Comic Con, for trademark infringement. If ever there were a classic case of a trademark that had moved into a generic status, "comic-con" and similar iterations would have to be it. There are comic cons everywhere. In the midst of all this, or perhaps because of it, the Salt Lake City Comic Con applied for its own trademark over its name, which, again, ought to have been denied as being too generic in my opinion. The USPTO, in its infinite wisdom, disagreed, granting them the mark as the trademark suit is still going on. You already know what happened next, don't you?

Yup, every other comics convention that uses comic con, the term so generic that everyone effing uses it, is now lining up at the USPTO's door to get their own trademarks.

This week sees the kick-off of this year’s Boston Comic Con. Which seems a good a time as any to register the trademark for the name for “Organizing and conducting conventions, exhibitions, and gatherings for entertainment purposes and in the fields of artwork, animation, comic books, fantasy, gaming, popular culture, science fiction, and television and film” and for “Comic books, commemorative comic books, posters, commemorative posters” and “T-shirts, commemorative T-shirts.”

They are not alone. Rhode Island Comic Con and Kansas Comic Con have also launched trademark bids in the past month. ‘Tis the season… they may be inspired by the attempts and claims of Salt Lake Comic Con. Denver Comic Con also has a trademark registration.

And unless this is stopped tout de suite, there's absolutely no reason to expect that all the other comic cons in all the other cities will be filing their applications soon. Why wouldn't they? The USPTO, in conjunction with a lawsuit over a term that hasn't yet been ruled generic, but should be, have thrown open the door for everyone to get their piece of the generic pie. And the end result of all of this? Tons of billable hours, of course.

They can expect a challenge from Comic-Con International, the organisers of San Diego Comic-Con and WonderCon, who own the trademarks on San Diego Comic-Con, Anaheim Comic-Con, San Francisco Comic-Con and Los Angeles Comic-Con.

Why? Why? Why pay a legal team to spend a ton of time and money fighting for a mark that doesn't threaten you, that has become generic, and that has been employed the entire time your own mega-popular convention has become insanely successful. Why are we doing any of this?